OPPOSITION No B 3 046 844

PZ Cussons (International) Limited, Manchester Business Park, 3500 Aviator Way, M22 5TG, Manchester, United Kingdom (opponent), represented by PATPOL SP Z.O.O., Nowoursynowska 162 J, 02-776, Warszawa, Poland (professional representative)

a g a i n s t

Shenzhen Hongyuan Supply Chain Management Co., Ltd, Shilong Community, Shiyan Street, Baoan District, Shenzhen City, China (applicant), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, W1S 1YH, London, United Kingdom (professional representative).

On 11/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 844 is upheld for all the contested goods.

2. European Union trade mark application No 17 504 101 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 504 101 for the word mark ‘Luxsea’. The opposition is based, inter alia, on Polish trade mark registration No 306 046 (application No 474 106) for the figurative trade mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish trade mark No 306 046, which is in grace period for proof of use.

a) The goods

The goods on which the opposition is based are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps, cosmetics; perfumery; non-medicated toilet preparations for personal use; cosmetic preparations for skin care; astringents for cosmetic purposes; preparations for the bath and shower; bath creams; foam baths; (bath) salts; bath oils; bath herbs; bath gel; shower creams; preparations for the hair; hair color preparations; shampoo and conditioners; hair lotions; toiletries; body lotions; non-medicated skin cleansers; cosmetic moisturisers; body moisturisers; moisturising creams; hand creams; essential oils; massage oils; eye gels; eye balms; make-up remover; beauty serums; body scrubs; bath salt scrubs; sponges and tissues impregnated with cosmetics; shaving preparations; shaving gel; pre-shave creams; shaving mousse; after-shave; foot soaks; foot lotions; foot scrubs; foot powder; body lotions; skin cleansers; tanning cosmetic preparations; sun screen; cosmetic masks; face masks; mud masks; cosmetic toners; scrubs and pumice stones; body wraps; depilatory preparations; fragranced pebbles; incense sticks; scented oils for burning; potpourris; dentifrices; anti-perspirants; body sprays; body spritz; preparations for nail care; cuticle cream; cuticle oil.

The contested goods are the following:

Class 3: Lavender oil; rose oil; cosmetic preparations for baths; lipsticks; cotton swabs for cosmetic purposes; cotton sticks for cosmetic purposes; beauty masks; skin whitening creams; nail varnish; nail polish; hair dyes; false eyelashes; cosmetic kits; cosmetics; cotton wool for cosmetic purposes; cosmetic pencils; depilatories; eyebrow cosmetics; perfumes; false nails; nail care preparations; make-up powder; shaving preparations; eyebrow pencils; cosmetic preparations for slimming purposes; adhesives for affixing false eyelashes; lip glosses; nail art stickers; sunscreen preparations; freckle eliminating creams; anti-freckle creams; eyeshadows; dentifrices; toothpastes; dental bleaching gels; teeth whitening strips.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested lavender oil; rose oil are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested cosmetic preparations for baths; lipsticks; beauty masks; skin whitening creams; nail varnish; nail polish; hair dyes; false eyelashes; cosmetic kits; cosmetics; cosmetic pencils; depilatories; eyebrow cosmetics; perfumes; false nails; nail care preparations; make-up powder; shaving preparations; eyebrow pencils; cosmetic preparations for slimming purposes; adhesives for affixing false eyelashes; lip glosses; nail art stickers; sunscreen preparations; freckle eliminating creams; anti-freckle creams; eyeshadows; dentifrices; toothpastes; dental bleaching gels; teeth whitening strips are identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the contested goods are included in the broad categories of the opponent’s toiletries (which include preparations for beautification and personal hygiene) or perfumery.

The contested cotton swabs for cosmetic purposes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes are similar to the opponent’s toiletries. On the one hand toiletries include preparations for beautification and personal hygiene, while on the other hand cotton balls for cosmetic purposes is a soft mass of cotton used for applying or removing liquids or creams to the skin. Cotton wool for cosmetic purposes is used to apply or remove cosmetics from the face or body, and is therefore complementary to the opponent’s goods. Additionally, they usually coincide in producer, relevant public and distribution channels.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar constitute everyday products directed at the public at large.

The degree of attention is considered to be average.

c) The signs

	Luxsea
Earlier trade mark	Contested sign

The relevant territory is Poland.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark composed of the verbal element ‘LUKSJA’ depicted in purple fairly standard upper-case letters, surrounded by a slightly stylised label in purple as well. Labels are considered commonplace figurative elements and therefore non-distinctive and, in any event, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). The verbal element does not have any meaning for the relevant public and is normally distinctive.

The contested sign is the single-word mark ‘Luxsea’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the contested sign is in title-case letters. This word has no meaning for the relevant public and it possesses an average degree of distinctiveness. The applicant claims that the ‘contested mark consists of two syllables ‘LUX’ and ‘SEA’’. It is claimed in this regard that the element ‘LUX’ in the [contested] mark is understood in many parts of the European Union as meaning ‘luxury’ or as ‘luxe’ (in Bulgarian, Czech, Dutch and Romanian), and that the word ‘SEA’ will be understood as an ‘expanse of salt water’, by consumers of the European Union that understand basic English. This claim must be set aside for the following reasons. First of all, the applicant does not provide any evidence in support of this argument. Moreover, in the present case, all the letters making up the mark applied for (‘L’, ‘u’, ‘x’, ‘s’, ‘e’ and ‘a’) are represented one after the other without a space or separating element, including between the group of letters ‘lux’ and the group ‘sea’; as a result, the series of letters ‘Luxsea’ is presented as a single word element. Moreover, since the mark applied for is not of a particular nature as to cause the person reading it to perform such a separation or to wonder about the potential meaning of possible combinations of the constituent letters, it must be held that it is extremely unlikely that the average consumer will proceed to analyse linguistically the various details of the mark applied for, in order to break it down and to give it a meaning in Polish. Accordingly, the relevant public will not perceive the groups of letters ‘lux’ and ‘sea’ independently but the mark applied for as a whole (27/02/2019, T-107/18, Dienne/ENNE, EU:T:2019:114, §§ 32-37).

Visually, the signs have the letters ‘LU*S*A’ in common. Moreover, they share the same number of letters, six for both signs. Furthermore, the signs’ third letters, ‘K’ in the earlier mark and ‘X’ in the contested sign, share a certain degree of visual similarity. The signs differ in the letters ‘J/E’. They also differ in the stylisation (purple colour) and the label of the earlier mark, which have no counterparts in the contested sign, but as explained above have a lesser impact on the consumers.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first syllables, ‘LUKS/LUXS’, and in the sound of the last letter ‘A’. The different letters ‘J/E’, placed after the first syllables of the signs and before their last letter, ‘A’, are not able to create a remarkable distance in their sound since, owing to a similar structure of the signs based on the same number of letters, they will both be pronounced as two similar vowels (‘J’ will be read in this context as ‘I’).

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non‑distinctive figurative element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods at issue in Class 3 have been found to be identical or similar and they target the general public which will display an average degree of attention.

Concerning the signs, the earlier mark’s verbal element is almost entirely included in the contested sign, and the sole difference between the words ‘LUKSJA’ and ‘LUXSEA’ lies in two letters placed in the middle, i.e. ‘K/X’ and ‘J/E’. With respect to the consonants, they have been found to be visually similar to a certain degree and aurally identical (when read in conjunction with the following letter ‘S’). With respect to the vowels, they are not so far apart when compared aurally. Moreover, the figurative element of a label in the earlier mark is non-distinctive and the graphic aspects of the earlier mark have less impact than its verbal element. As a result, a visual similarity to at least an average degree and an aural similarity to a high degree have been found. Conceptually, as the signs have no meaning for the relevant public, the comparison is neutral. As a consequence, due to the visual and aural similarity of the signs, and considering that there is no concepts that can help the consumer distinguish the signs as originating from different undertakings, a likelihood of confusion cannot be ruled out.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 306 046. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Polish trade mark registration No 306 046 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Valeria ANCHINI

Keeva DOHERTY

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.